TTAB Affirms Reexamination Decision Ordering Cancellation of BAIA Registration for Non-use, Rejects Residual Goodwill Argument

The Board affirmed the USPTO's decision on reexamination, ordering cancellation of a registration for the mark BAIA & Design (shown below) for " Boats; Ships; Yachts" because Registrant Hanako failed to demonstrate use of the mark in commerce by the critical date (the date of filing its statement of use, or the last date for filing same). The petition for reexamination presented a prima facie case, shifting the burden to Hanako to show use of the mark. In re Hanako design SA, Reexamination No. 2024-101552R for Registration No. 7220244 (June 5, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Registrant Hanako failed to submit a "verified statement signed by someone with firsthand knowledge of the facts to be proved, setting forth … factual information … about the use of the mark in commerce … and how the evidence demonstrates use of the mark in commerce as of any relevant date” as required by Rule 2.93(b)(7). That failure alone justified affirmance of the reexamination decision.

Nonetheless, in the interest of completeness, the Board addressed Hanako's arguments. Hanako did not contend that it ever sold any goods under the mark. Instead, it argued that it succeeded to rights in the mark tracing back to the owner of a prior BAIA registration that was cancelled in 2012. However, the Board found four missing links in the chain-of-title.

Hanako also argued that, although it lacked evidence that it or its purported predecessors-in-interest used the registered mark, there were "multiple active U.S. listings for BAIA yachts" that "advertise the yachts for purchase." According to Hanako, this "secondary market" preserved "trademark significance" and "demonstrates that the … Mark remains visible to consumers and retains its goodwill." The Board rejected that argument.

While evidence of residual goodwill can serve to negate a charge of abandonment based on a mark having become the generic name for the goods, see Adamson Sys. Eng’g, Inc. v. Peavey Elecs. Corp., No. 92076586, 2023 TTAB LEXIS 454, at *18, the problem here is different: Registrant’s nonuse (and the lack of evidence that Registrant’s alleged predecessor-in-interest, Italproperties, ever used the mark). Alleged residual goodwill does not defeat nonuse. See, e.g., id. at *43-44; see also Azeka Bldg. Corp. v. Azeka, No. 91218679, 2017 TTAB LEXIS 123, at *29-32; Gen. Motors Corp. v. Aristide & Co., No. 91167007, 2008 TTAB LEXIS 18, at *14-15 (TTAB 2008). Nonuse remains nonuse.

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TTABlogger comment: For a discussion of the significance of residual goodwill, see Jerome Gilson and Anne Gilson LaLonde, The Zombie Trademark: A Windfall and A Pitfall, 98 TMR 1280 (November - December 2008).

Text Copyright John L. Welch 2026.